Davis Brown Intellectual Property Law Blog

Everyone knows the National Football League (“NFL”) takes its trademark policing and enforcement responsibilities very seriously. In fact, the NFL is so aggressive that its efforts have been frequently mocked and discussed by the media.

One such example came in January of 2014, courtesy of Stephen Colbert. During an episode, Stephen Colbert decided to try and find a “loophole” in the restrictions on the use of the SUPER BOWL trademark by deeming his fake event the “SUPERB OWL.” Though Colbert’s use of the term was for entertainment value only, as discussed below, a Pheonix non-profit took it seriously.

Since 1987—the earliest records found at the United States Patent and Trademark Office (“USPTO”)—the NFL and its subsidiaries have filed over 20 Notices of Opposition against third-parties to protect its SUPER BOWL trademark.

A Notice of Opposition is a proceeding before the USPTO that allows an owner of a trademark to potentially stop the registration of a third-party mark. There are many available bases for one to file a Notice of Opposition, one of which is that the applied-for mark will create confusion with a previously registered—or in some cases, unregistered—trademark. While there are some similarities between an opposition proceeding and litigation in federal court, there are also major differences as well. These, however, are outside the scope of this particular blog post. Based on our research, the NFL was successful in each one of these oppositions, i.e., the opposed trademark application never matured into a federal registration.

Because the NFL’s aggressive tactics are so well known, one would think that people would not try to obtain federal registrations for names similar or identical to the SUPER BOWL trademark. However, despite the NFL’s well known tactics, a company called The Night Run filed a trademark application on July 16, 2014, for the mark SUPERB OWL for use in connection with organizing, arranging, and conducting running events. Unsurprisingly, on July 13, 2015, the NFL filed a Notice of Opposition against The Night Run’s for its pending application.

Why this Case is Interesting

Outside of the fact that it is the NFL trying to take down another company for using anything remotely close to its SUPER BOWL trademarks, there are some interesting things about this case.

First, the NFL is taking the position that its SUPER BOWL trademarks are considered “famous.” As we discussed in prior posts (Yankees Win Big, Chicago Cubs Make News Again), a “famous” trademark is provided additional protection that most other trademarks do not have. For instance, the scope of rights for a “famous” trademark will encompass a broader set of uses than a non-famous mark.

Second, the mark at issue in the application could be, in the author’s opinion, held substantially different from the SUPER BOWL mark. Though the NFL is correct that The Night Run’s SUPERB OWL trademark has simply changed a space in the name, this space creates a different overall commercial impression. The two words no longer sound the same, mean the same or look the same—part of the standard test for trademark infringement.

Third, the NFL is using evidence of how the mark is actually used to demonstrate the intent to trade off its good will. As you can see from the Notice of Opposition, the NFL provided several screen shots of the Night Run’s website to show its clear attempt to create an association and play off of the Super Bowl.

This will be an interesting case to follow. Check back to follow its developments and conclusion.